RPX Corporationv.Cedatech Holdings, LLC

Patent Trial and Appeal Board

Oct 13, 2015

09683706 (P.T.A.B. Oct. 13, 2015)

Trials@uspto.gov Paper No. 11
571.272.7822 Entered: October 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
RPX CORPORATION,
Petitioner,
v.
CEDATECH HOLDINGS, LLC,
Patent Owner.
_______________

Case IPR2015-00736
Patent 7,707,591 B2
_______________

Before RAMA G. ELLURU, BART A. GERSTENBLITH, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

I. INTRODUCTION
RPX Corporation (“Petitioner”) filed a Request for Rehearing
(Paper 9, “Req. Reh’g”) of the Decision Denying Institution of Inter Partes
Review of U.S. Patent No. 7,707,591 (Ex. 1001, “the ’591 patent”) (Paper 8,
dated August 13, 2015, “Dec.”). Petitioner requests reconsideration of the
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denial of institution and contends that we misapprehended and overlooked
37 C.F.R. § 42.73(b) and prior Board decisions that Petitioner asserts should
have compelled us to construe the statutory disclaimer filed by Cedatch
Holdings, LLC (“Patent Owner”) as a request for adverse judgment. Req.
Reh’g 1. For the reasons stated below, Petitioner’s request is denied.
II. STANDARD OF REVIEW
Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
a panel will review the decision for an abuse of discretion.” An abuse of
discretion occurs when a “decision was based on an erroneous conclusion of
law or clearly erroneous factual findings, or . . . a clear error of judgment.”
PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
(Fed. Cir. 1988) (citations omitted). The request must identify, specifically,
all matters the party believes the Board misapprehended or overlooked, and
the place where each matter was addressed previously in a motion,
opposition, or reply. 37 C.F.R. § 42.71(d).
III. DISCUSSION
In our Decision Denying Institution, we determined that trial would
not be instituted, in accordance with 37 C.F.R. § 42.107(e), because Patent
Owner filed a statutory disclaimer under 35 U.S.C. § 253(a) in compliance
with 37 C.F.R. § 1.321(a). Dec. 2. Petitioner does not contend that we
should have instituted an inter partes review; rather, Petitioner contends that
we should have considered Patent Owner’s statutory disclaimer as a request
for adverse judgment.1 Req. Reh’g 1.

1 Petitioner’s Request for Rehearing reiterates the discussion that occurred
during a conference call on July 20, 2015. Req. Reh’g 2. Also, Petitioner
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Although we did not discuss 37 C.F.R. § 42.73(b) in our Decision
Denying Institution, Petitioner’s position regarding its applicability was
considered. We take this opportunity to explain, in detail, why we did not
designate our Decision Denying Institution as an adverse judgment.
First, we do not agree that the factual circumstances surrounding
Patent Owner’s disclaimer fall within any of the actions that are to be
construed as a request for adverse judgment under 37 C.F.R. § 42.73(b). In
particular, § 42.73(b) states:
Request for adverse judgment. A party may request adverse
judgment against itself at any time during a proceeding.
Actions construed to be a request for adverse judgment include:
(1) Disclaimer of the involved application or patent;
(2) Cancellation or disclaimer of a claim such that the party
has no remaining claim in the trial;
(3) Concession of unpatentability or derivation of the contested
subject matter; and
(4) Abandonment of the contest.
37 C.F.R. § 42.73(b).
Patent Owner did not disclaim the patent, for example by filing a
disclaimer under 35 U.S.C. § 253(b); rather, Patent Owner disclaimed claims
under § 253(a). Thus, subsection (b)(1) is inapplicable.

indicates correctly that our subsequent Order (Paper 6) placed the burden on
Patent Owner to explain why we should not construe Patent Owner’s
statutory disclaimer as a request for adverse judgment. Id. at 1–2. Even
though Patent Owner did not take the opportunity to respond to our request,
we determined, nonetheless, not to construe Patent Owner’s disclaimer as a
request for adverse judgment because Patent Owner undertook none of the
“[a]ctions construed to be a request for adverse judgment” under 37 C.F.R.
§ 42.73(b).
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Subsection (b)(2), which refers to “disclaimer of a claim such that the
party has no remaining claim in the trial” (emphasis added), is also
inapplicable. Because it includes the phrase “such that the party has no
remaining claim in the trial,” it is our view that subsection (b)(2) applies
only after a trial has been instituted. See 37 C.F.R. § 42.2 (“Trial means a
contested case instituted by the Board based upon a petition. A trial begins
with a written decision notifying the petitioner and patent owner of the
institution of the trial.”). In the circumstances here, however, trial had not
yet been instituted. Thus, subsection (b)(2) does not require that we
construe Patent Owner’s disclaimer as a request for adverse judgment.
Additionally, Petitioner does not contend that subsections (b)(3) or
(b)(4) apply, and we agree that they do not. Accordingly, the facts presented
here do not fall within any of subsections (b)(1)–(4), and Petitioner has not
pointed us to anything that requires us to construe Patent Owner’s disclaimer
as a request for adverse judgment.
Second, contrary to Petitioner’s argument, our Decision Denying
Institution does not depart from prior Board practice. We are aware of at
least the following four Board decisions addressing facts analogous to those
presented here—a pre-institution statutory disclaimer filed by a patent owner
disclaiming each of the claims challenged in the respective petition:
(1) Hospira, Inc. v. Janssen Pharms., Inc., Case IPR2013-00365
(PTAB Oct. 24, 2013) (Paper 9);
(2) Tandus Flooring, Inc. v. Interface, Inc., Case IPR2013-00526
(PTAB Feb. 14, 2014) (Paper 7);
(3) Global Tel*Link Corp. v. Howlink Global LLC, Case
IPR2014-00696 (Aug. 15, 2014) (Paper 9); and
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(4) CoolIT Systems, Inc. v. Asetek Danmark A/S, Case
IPR2014-01172 (Jan. 29, 2015) (Paper 12).
In Hospira and Global Tel*Link, the Board treated the patent owner’s
disclaimer as a request for adverse judgment. But in Tandus Flooring and
CoolIT Systems, in contrast, the Board did not treat the patent owner’s
disclaimer as a request for adverse judgment and, instead, denied institution
in accordance with 37 C.F.R. § 42.107(e).
The four Board decisions cited above reflect that although the Board
may treat a disclaimer such as that filed by Patent Owner as a request for
adverse judgment, the Board is not required to do so. In light of the specific
language in § 42.73(b) and the decisions cited above, therefore, our Decision
Denying Institution was not “based on an erroneous conclusion of law or
clearly erroneous factual findings, or . . . a clear error of judgment.” PPG
Indus., Inc., 840 F.2d at 1567 (citations omitted).
IV. ORDER
Accordingly, it is hereby ORDERED that Petitioner’s Request for
Rehearing (Paper 9) is denied.

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For PETITIONER:

Richard F. Giunta
Randy J. Pritzker
Edmund J. Walsh
WOLF, GREENFIELD & SACKS, P.C.
RGiunta-PTAB@wolfgreenfield.com
RPritzker-PTAB@wolfgreenfield.com
EWalsh-PTAB@wolfgreenfield.com

For PATENT OWNER:

Frank M. Washko
TIBURON INTELLECTUAL PROPERTY, PLLC
fwashko@tiburonip.com